News Archive

News Archive - Griffith Hack

  • Business names go national: update

    April 24, 2012

    28 May 2012 is the date set for the commencement of the national system to register business names. However this commencement date is still subject to the passage of legislation through State and Territory parliaments. What does this mean if you have a business name registration that is due to expire before this commencement? Senior Associate Lyn Stevens explains...


  • The Australian Federal Court revisits the discretion not to remove a mark for non-use

    April 24, 2012

    Principal Chris Sgourakis provides an outline regarding the case of Austin, Nichols & Co Inc v Lodestar Anstalt and highlights that Trade Marks owners should be wary regarding non-use in Australia...


  • Never going to be a Nex1

    April 24, 2012

    The use of the prefix "Nex" in trade marks was found to establish an infringement under Section 60, 44 and 42b of the Trade Marks Act on the basis that the prefix "Nex" could cause deception to consumers as both parties covered identical and similar goods...


  • Plunder downunder: How to read the iiTrial piracy verdict

    April 24, 2012

    Speaking to iTnews.com.au about the recent iiNet Australian High Court decision, Griffith Hack Principal Wayne Condon provided the legal perspective on the takeouts from the judgment...


  • The show must go on

    April 23, 2012

    Griffith Hack IP Law Group Senior Associate outlines the case decision involcing Singtel Optus and the National Rugby League and what this means for parties negotiating commercial agreements concerning digital technology...


  • Don't blame me! Authorisation of copyright infringement clarified

    April 23, 2012

    Australia’s final appellate court, the High Court, has today handed down its decision dismissing an appeal by a number of film and television companies who had argued against internet service provider, iiNet. National Law Group Practice leader Wayne Condon outlines the findings and the importance of this decision...


  • New obligation for Google search terms

    April 23, 2012

    A must-read article for all companies that have a keyword arrangement with Google to avoid engaging in misleading and deceptive conduct...


  • Fair reward for fair disclosure

    April 23, 2012

    Griffith Hack achieved victory for Wyeth in the long-running patent dispute over the blockbuster drug, Effexor-XR...


  • Lessons from false advertising case

    April 23, 2012

    not-to-be-missed key lessons for marketers from a recent case involving false and misleading advertising – and how to avoid putting your company in the firing line...


  • Employer-employee patent disputes

    April 23, 2012

    Who owns the IP when an employee creates an invention during the course of employment? Discover the facts of a recent case that deals with this very issue...


  • US Patent Law update

    April 23, 2012

    two key changes in US patent practice should benefit patent owners and applicants seeking protection in the US, in light of the recent passing of the America Invents Act...


  • The Bar has now been raised: update

    April 23, 2012

    Following our recent update on the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. The Intellectual Property Laws Amendment (Raising the Bar) 2012 will commence 12 months from Assent containing most changes from the 2011 bill. Wayne Condon and Eliza Mallon explain further...


  • Tide turns for trade mark owners

    April 23, 2012

    Owners of well-known trade mark marks can take comfort from a recent decision involving the well-known BOTOX pharmaceutical mark...


  • Securing the way forward on Alzheimer's

    April 23, 2012

    Leading Australian intellectual property law firm, Griffith Hack has partnered with patent analyst specialists Ambercite to apply sophisticated analysis in a newly released report on Alzheimer's treatments. The report considers 48,000 patents in the area of Alzheimer’s treatment to show the leading patents, patenting areas, patent owners and inventors...


  • Clean Technology grants a boon for manufacturers

    April 23, 2012

    find out how your business could get a slice of the AUD$1 billion in competitive grants being offered by the Australian Government, aimed at helping manufacturers in this new carbon economy...


  • Rebates offered to foreign entities undertaking R&D in Australia

    April 23, 2012

    The Australian government is encouraging foreign entities undertaking R&D in Australia via generous rebates, with SMEs set to be the big beneficiaries....


  • 161 Collins Street Melbourne officially opened

    April 23, 2012

    Recognising a significant milestone in Griffith Hack’s long and proud history, the new Melbourne office of Griffith Hack was officially opened on Wednesday 21 March 2012...


  • World-first for Eenee Weenees™ nappy creator

    April 23, 2012

    Sue Allison-Rogers of Eenee Weenees™ has developed an Australian designed and produced, zero waste disposable nappy made from sustainable materials that is acceptable for commercial composting...


  • Griffith Hack Trainee Patent Attorney's PhD thesis published

    April 23, 2012

    Griffith Hack Trainee Patent Attorney, Dr Andy Mukherji's PhD thesis has been published as a paperback book by LAP Lambert Academic Publishing...


  • Griffith Hack employee out on top

    April 23, 2012

    Aparna Watal, Trainee Trade Mark Attorney in our Sydney office, has recently been awarded the Dean’s International Student Prize and the Clayton Utz Administrative Law Prize for 2011...


  • Nominations for the 13th Annual Green Globe Awards now open

    April 23, 2012

    Nominations have opened for the 13th Annual Green Globe Awards (Awards), a NSW Office of Environment and Heritage initiative. The Awards recognise excellence, leadership and innovation across Energy, Water and Waste; Sustainability; and Leadership and Innovation...


  • INTA Annual Meeting 2012

    April 23, 2012

    Anne Makrigiorgos, Nicola Scheepers and Sally Nicolson are all set to attend this year's annual International Trademark Association (INTA) meeting in Washington DC...


  • Appointments, elevations and registrations

    April 23, 2012

    Our recent staff appointments, elevations and registrations.


  • Raising the Bar on the importation in to Australia of goods infringing trade mark and copyright

    March 28, 2012

    Brand owners advised to be vigilant and take advantage of the forthcoming amendments to the Customs Seizure provisions of Australian Trade Mark and Copyright legislation. Wayne Condon and Eliza Mallon explain...


  • FSANZ seeks comments on nutritive and novel foods regulation

    March 26, 2012

    On 26 March 2012, Food Standards Australian New Zealand (FSANZ) released a consultation paper on a proposed new approach to regulating nutritive substances and novel foods. Special Counsel Geraldine Farrell and Lawyer Su-Ann Burke outline the highlights of the paper and how a submission can be made...


  • The Bar has now been raised - infringement exemptions to have immediate effect

    March 22, 2012

    The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed by the House of Representatives on 20 March 2012. It is now expected to receive the Royal Assent in the coming weeks after which it will become law...


  • Griffith Hack partners with the Museum of Contemporary Art (MCA).

    March 20, 2012

    Griffith Hack has joined the Museum of Contemporary Art Australia (MCA) as a Corporate Member. The MCA will launch its iconic newly renovated premises on 29 March, and Griffith Hack is delighted to share in this major Australian event...


  • Yahoo/Facebook IP War - Why Patents still matter

    March 19, 2012

    IP Management Consultant Mike Lloyd, spoke to Boardroom Radio about the IP battle set to begin between Yahoo and Facebook. This follows an accusation made by Yahoo last week, that Facebook has violated as many as 20 of its patents...


  • Griffith Hack client GHD launches Innovation Interchange

    March 15, 2012

    GHD, in partnership with the Victorian Government, has now launched its groundbreaking Innovation Interchange - an exclusive business-to-business global community to connect, collaborate and solve infrastructure industry challenges...


  • AusBiotech Journal: Getting the message right

    March 12, 2012

    In the special medical technology March issue of the AusBiotech Journal, Griffith Hack Special Counsel Geraldine Farrell wrote an article on ‘Getting the message right – a brief overview of medical device labelling and advertising in Australia’...


  • Market Recognition in Chambers Global for Griffith Hack's IP Law Group

    March 5, 2012

    Griffith Hack maintains its strong showing in the latest edition of Chambers' Global: "The World's Leading Lawyers" guide for 2012...


  • AFR highlights Wayne Condon, Andrew Goatcher and Geraldine Farrell as 'Best Lawyers'

    March 2, 2012

    Griffith Hack Lawyers, Wayne Condon,Andrew Goatcher, and Geraldine Farrellhave today been recognised as “Best Lawyers” by their peers in the Australian Financial Review (AFR)...


  • Griffith Hack once again achieves Tier 1 position in MIP for yet another year

    March 2, 2012

    Griffith Hack has once again achieved the Tier 1 position in patent prosecution work in the latest World IP survey, conducted by Managing Intellectual Property (MIP)...


  • Griffith Hack named 2012 Life Sciences Law Firm of the Year

    February 28, 2012

    Griffith Hack has been named 2012 Life Sciences Law Firm of the Year in CorporateINTL Magazine's 2012 Global Awards...


  • "Following the herd": how our tastes and preferences are influenced by perceptions of popularity

    February 24, 2012

    We often like to think that our tastes and preferences, especially for cultural products such as music, movies, books, fashion and restaurants, are our own. However, research has shown that popularity signals have a far stronger effect than we appreciate...


  • Twitter objects to followers in the real estate market

    February 24, 2012

    Twitter successfully opposed the registration of a TWITTER REAL ESTATE device trade mark application, even though Twitter does not own or use a trade mark in relation to real estate services. Senior Associate Kellie Stonier explains...


  • The real thing...

    February 24, 2012

    Senior Associate Lyn Stevens provides an outline regarding the case of Unilever Plc and Unilever Australia v Regal Cream Products Pty Ltd to determine the use of the word 'Real' in a trade mark and what this refers to...


  • Omega opposes trade mark registration

    February 24, 2012

    The use of the word "Omega" in trade marks was found to establish an infringement under Section 44 of the Trade Marks Act on the basis that the word "Omega" was the most distinctive part of the applicants' trade marks...


  • Claiming ownership of The Weather Channel - storm in a teacup?

    February 24, 2012

    A recent decision of IP Australia has considered distinctiveness of the mark THE WEATHER CHANNEL, which two parties claimed ownership of. Trade Marks Professional Simon Gapes explains...


  • Notice to security holders in trade marks: Commencement of the Personal Property Securities Act 2009

    February 24, 2012

    Since the Personal Property Securities Act 2009 (Cth) (PPS Law) came into operation earlier in the year, the PPS Law has implemented a national regime governing security interests over personal property, including trade marks. What does this mean for holders of a security interest in a registered trade mark?...


  • Patent trends for Alzheimer's disease

    February 14, 2012

    Following the recent release of the white paper ‘Clearing the fog: Patenting trends for the treatment of Alzheimer’s disease’, IP Management Consultant Mike Lloyd and Principal Amanda Stark spoke to Boardroom Radio about the results of this paper...


  • 94.7 The Pulse: Patents in Alzheimer's disease

    February 13, 2012

    Following the recent release of the white paper, “Clearing the fog: Patenting trends for the treatment of Alzheimer's disease”, IP Management Consultant Mike Lloyd spoke to regional radio station The Pulse about the results of this paper...


  • Green light for Optus TV Now

    February 7, 2012

    National Law Group Senior Associate Kellie Stonier spoke to Boardroom Radio about Optus’ significant victory in the Australian Federal Court against copyright claims brought by the AFL, Telstra and NRL...


  • Valuing Patents and Inventions: A Network Approach

    February 1, 2012

    Griffith Hack IP Consultant Mike Lloyd recently co-authored an article with Doris Spielthenner, co-founder and Managing Director of Ambercite for the US based publication Intellectual Property Management & Valuation Reporter...


  • To the big end of town

    December 12, 2011

    After more than 15 years at its current location on St Kilda Road, the Griffith Hack Melbourne office will be relocating to the heart of the CBD in Melbourne – the ‘Paris end’ of Collins Street to be precise. The Melbourne team is delighted to be moving into this premier city location as of Tuesday 3 January 2012...


  • Leaders in innovation

    December 12, 2011

    World leading engineering, architecture and environmental consulting company, GHD is set to launch its groundbreaking Innovation Interchange - an exclusive business-to-business global community to connect, collaborate and solve infrastructure industry challenges...


  • Contracts for Dummies - part 3

    December 12, 2011

    In this third part of Contracts for Dummies series, Geraldine Farrell and Janine Steinhardt look at typical contractual provisions in more detail and provide an overview of some of the types of clauses you are likely to see in commercial agreements...


  • Consumer law update – warranties

    December 12, 2011

    Manufacturers and suppliers take note – the new consumer law regulation comes into effect on 1 January 2012 governing contractual warranties...


  • Additional damages fail to flow from infringing valve

    December 12, 2011

    The Federal Court of Australia has considered the award of additional damages in a patent infringement case for the first time...


  • Raising the Bar bill update

    December 12, 2011

    IP Australia’s draft Bill to amend the Patents Act 1990 has now been formally introduced to the Australian Parliament – Janelle Borham and Dr Lisa Clark provide an update on the key changes...


  • European court bans embryonic stem cell patents

    December 12, 2011

    The European Court of Justice has issued a ruling that patents should not be granted for inventions that involve the use of embryonic stem cells. Brendan Nugent explains what you need to know about this important ban, which extends throughout the European Union, irrespective of national law...


  • Distinctiveness of sub brands – Marlin Australia

    December 12, 2011

    A recent Australian Trade Mark Office decision highlights the need to pay special attention to ‘sub-brands’ or secondary trade marks in labeling and marketing...


  • Watchmaker keeps timely trade mark

    December 12, 2011

    Principal Nicola Scheepers provides an update on an interesting case involving the world’s oldest unchanged and still active trade mark, Longines...


  • Trading Post’s advertising deemed misleading while Google not liable

    December 12, 2011

    The Australian Federal Court has clarified the legal position regarding the use of third-party trade marks in search engine advertising...


  • All systems go for the new R&D tax incentive

    December 12, 2011

    An opportunity for all innovators – find out if your business is eligible to tap into the Federal Government’s new rebate...


  • Searcher spotlight

    December 12, 2011

    Griffith Hack Patent Searcher Lynne Teo put the newest member of the Information Services Group, Dr Paul Hamilton-Brown under the spotlight...


  • Griffith Hack essential services during Christmas and New Year

    December 12, 2011

    Please click here for our nationwide Christmas and New Year office hours...


  • UPOV launches new website

    December 12, 2011

    To celebrate its 50th anniversary, the International Union for the Protection of New Varieties of Plants (UPOV) has launched a new website...


  • World Intellectual Property Report released

    December 12, 2011

    With the world of intellectual property changing at rapid pace, the World Intellectual Property Organisation has just released its first World Intellectually Property Report. The report makes interesting reading for Australian IP owner and IP Consultant Mike Lloyd highlights the key points...


  • Griffith Hack client has Design Award all packaged up

    December 12, 2011

    Griffith Hack client, the innovative Australian Inhibitor Pty Ltd, a niche market research and development packaging specialist, has just been awarded two highly prestigious Australia Packaging Design Awards...


  • The psychology of buyers and wearers of counterfeit goods: Can wearing a fake Rolex watch lower your self-esteem and induce general unethical behaviour?

    December 8, 2011

    Counterfeiting of luxury brands is a multi-billion dollar industry, and while some buyers of fakes are innocent victims who believe they are buying the real thing, most buyers are fully aware that the goods they are buying are fake and are complicit in their illegal trade. In this article, we look at two studies which examined the psychology of buyers and wearers of fake goods…


  • Tobacco plain packaging reforms

    December 8, 2011

    The Tobacco Plain Packaging Bill 2011 was passed by parliament on 21 November 2011 and is now before the Governor General for Royal Assent. The law will take full effect by 1 December 2012, meaning that all tobacco products will need to be sold in plain packaging by that date. Lucy Meadley outlines what this means for tobacco trade mark owners...


  • Business names go national

    December 8, 2011

    Senior Associate Lyn Stevens provides an update on the new online National Business Names Registration system and the benefits this will provide to all parties registering business names, regardless of the state they are located in...


  • My my my ... New Zealand High Court finds "MY Marks" are non-distinctive

    December 8, 2011

    The New Zealand High Court has recently issued a decision which held that “MY marks” featuring the prefix MY and a descriptive term were non-distinctive and therefore ineligible for registration. The decision clarifies the eligibility for registration of “MY marks” in New Zealand, and is an example of potentially different outcomes for traders wanting to protect a mark in both Australia and New Zealand...


  • Long running dispute between Campomar SL and Nike International Ltd continues

    December 8, 2011

    The recent decision in the long running dispute between Campomar and Nike has highlighted that the use of a trade mark does not need to be substantial to defend an application to remove a trade mark from the Register for non-use. Principal Nicola Scheepers explains…


  • Australia adopts the 10th edition of the Nice Classification

    December 8, 2011

    Starting 1 January 2012, the Australian Trade Marks Office will adopt to the 10th edition of the International Classification of Goods and Services. Nicola Scheepers notes the most substantial changes...


  • Australian design protection

    December 7, 2011

    Following the recent release of the white paper, “Protected by Design: The changing face of registered design protection in Australia”, Senior Associate Byron Bowman spoke with Boardroom Radio on the current major trends in design registration, what kind of design protection is available, what design registration certification does and what Byron’s number one tip is for registered designs...


  • The changing face of registered design protection in Australia

    December 5, 2011

    Interested in protecting your designs in Australia? In 2003 Australia made a major change in its design law with the introduction of the 2003 Designs Act. But what has been its impact on the IP landscape? How can design registrants adopt a best practice approach to protection?


  • Patent trolls in Australia?

    December 5, 2011

    National Law Group Practice Leader Wayne Condon recently spoke with Boardroom Radio on the issue of patent trolls – those who use patents as a weapon to extract significant licence fees, giving rise to a new industry of patent aggregators…


  • Ground-breaking ceremony for ground-breaking LNG hub

    December 5, 2011

    WA State Premier, Colin Barnett, wielded a silver-plated spade in a ground-breaking ceremony to mark commencement of...


  • Automotive Australia 2020 CRC awarded $26 million

    December 1, 2011

    The new Automotive Australia 2020 CRC has been awarded $26 million in the Australian Government’s CRC (Cooperative Research Centre) initiative to undertake research programs and build human capital in areas of...


  • 2011 Green Manufacturing Award goes to Toyota

    November 28, 2011

    Toyota has won the 2011 Green Manufacturing Award from management company the World Trade Group Limited...


  • Corporate INTL: PCT and Global IP Review

    November 18, 2011

    Life Sciences & Chemical Group Principal Janelle Borham recently presented the exclusive perspective on Australian Patent Cooperation Treaty (PCT) and Global IP sector focus in the November edition of CorporateINTL...


  • ABC Radio: Patents 101

    November 10, 2011

    Engineering Principal John McCormack Principal spoke with Fiona Parker on the Morning Program on ABC Central Victoria 91.1FM to provide an overview of the patents process within the Australian market and how a person can best protect their inventions...


  • Expanding the copyright “safe harbour”

    November 3, 2011

    Su-Ann Burke considers the Australian Attorney-General's recently released public consultation paper inviting submissions in response to a proposal to expand the scope of the “safe harbour” scheme under the Copyright Act 1968 (Cth)...


  • The information game

    November 2, 2011

    With the cyberspace information exchange evolving at rapid speed and considering the volume of information people now have access to online, Senior Associate Kate Hay spoke to Lawyers Weekly about what this means for the intellectually property law industry...


  • "I can feel it coming in the air tonight": Scent marketing and buying behaviour

    October 27, 2011

    In this regular update on scientific and psychological studies into consumer behaviour, Chris Sgourakis considers three studies on the effect of scents or ambient odours on buying behaviour...


  • Self represented party loses trade mark but fights on solo

    October 27, 2011

    The trade marks office’s recently published decision in Phillip Ryan v Wagering Western Australia, in which it allowed Wagering Western Australia’s application to remove Phillip Ryan’s trade mark on the grounds of non-use, highlights the need to take care when self filing applications...


  • Flying Kangaroo becomes grounded

    October 27, 2011

    In this David and Goliath case, Qantas has failed in opposing an application by Danniel Amadio for the words 'flying kangaroo'. This case just goes to show that if an organisation comes to be known in the marketplace by words or symbols which are not registered as a trade mark, that organisation should consider doing so...


  • Consulting on Copyright Safe Harbour but iiNet outcome needed first

    October 25, 2011

    IP Law Group Senior Associate Justin Lambert speaks with Boardroom Radio on the Government's recent release of a consultation paper proposing to broaden the scope of the safe harbor scheme under the copyright act...


  • Legal overhaul puts a premium on IP rights

    October 21, 2011

    Life Sciences Group Principal Janelle Borham recently spoke to the Australian Financial Review about the "Raising the Bar" bill which was introduced by the Senate in June and what this will mean for Australian patents...


  • Careers for Scientists in the Patenting World

    October 20, 2011

    Trainee Patent Attorney Jing Fung Tan was recently profiled in Science Careers' Career Magazine, speaking about the patent world providing himself and other scientists who want to stay close to science but leave the lab behind, a range of rewarding careers...


  • The art of innovation

    October 17, 2011

    IP Law Group Principal Wayne Condon was recently profiled amongst other leading IP lawyers in an Australasian Legal Business (ALB) magazine feature, The art of innovation...


  • Important changes to US Patent Law

    October 13, 2011

    United States Patent Law is undergoing substantial change which should be of interest to Australian businesses. Under the “America Invents” Act, signed into law on 16 September 2011, the US is taking steps...


  • Sky Business News: Research & Development Opportunities for Australian Businesses

    October 13, 2011

    Tracey Murray and David Mason, Directors of Griffith Hack Consulting, recently appeared on Sky Business News to discuss the research and development opportunities available to businesses in Australia...


  • Chemeca Conference 2011 - Update

    October 10, 2011

    Chemeca 2011 took place in Sydney at the end of September and once again provided an excellent forum for engineers and scientists to showcase their research efforts and technologies...


  • Australian Government invites comment on proposed cause of action for serious invasion of privacy

    October 5, 2011

    Organisations that frequently deal with privacy issues, such as those in the media industry, may wish to respond to the Issues Paper recently released by the Australian Government concerning the proposal to introduce a statutory right to take action for serious invasion of privacy. We inform you of the key issues that the Government is seeking responses to...


  • Australian Senate Committee recommends not banning patenting of human genes and biological materials

    September 22, 2011

    In a majority recommendation delivered in its report dated 21 September 2011, the Australian Senate Committee reviewing proposed amendments to the Australian Patents Act has recommended that the Senate should not pass the Patent Amendment (Human Genes and Biological Materials) Bill 2010...


  • Griffith Hack client strikes medical technology gold

    September 19, 2011

    Griffith Hack congratulates Dr John Arkwright from CSIRO Materials Science and Engineering on his recent 2011 ANSTO Eureka Prize for Innovative Use of Technology. The prize is part of the Australian Museum Eureka Prizes, the most prestigious awards in Australian science...


  • Shield your brand from .xxx domain now

    September 15, 2011

    Griffith Hack Principal, Jürgen Bebber spoke with Boardroom Radio about the need for companies to purchase .xxx domain names to avoid their brand potentially being misused.


  • Anyone for “Scooby Snacks”? The influence of licensed characters in children’s taste preferences

    September 14, 2011

    Chris Sgourakis looks at a Yale university study and considers how popular licensed cartoon characters can affect a child's perception of taste...


  • Broad not always better in NZ

    September 14, 2011

    Trade mark applications specifying very broad goods or services, or goods and services which an applicant may only have a general intention of extending its business into at some future time, may be invalid. A recent New Zealand trade mark opposition case highlights the risks of seeking such broad trade mark registration...


  • Plunge from grace for DKSH

    September 14, 2011

    The latest IP decision of the Australian Full Federal Court has reversed Justice Middleton's trial decision concerning the sale of a "copycat" coffee plunger...


  • Aldi finds itself in labelling labyrinth

    September 14, 2011

    Honey produced on Kangaroo Island is highly sought after. A claim of such origin may be made if the honey is sourced entirely from Kangaroo Island. Labels on Aldi’s JUST ORGANIC range did not meet that test...


  • SOLARHUT too close to “Hart”

    September 14, 2011

    What's in a name? The Australian Federal Court recently held that use of the name SOLARHUT infringed registered trade marks for the word SOLAHART...


  • National Business Name Registration System

    September 14, 2011

    If State Parliaments pass legislative reform under the National Partnership to Deliver a Seamless National Economy, a new national business registration system may be operational by mid 2012...


  • Record year for trade marks

    September 14, 2011

    IP Australia recently reported that trade mark applications were filed in a record number of classes in the last financial year...


  • Intellectual Property in the Life Sciences: A global guide to rights and their applications

    September 12, 2011

    Wayne Condon recently authored the exclusive Australian chapter for “Intellectual Property in the Life Sciences: A global guide to rights and their applications”, a publication written by world leading specialists on those issues affecting the life sciences sector...


  • Introducing... Griffith Hack Consulting

    September 7, 2011

    Griffith Hack is delighted to introduce Tracey Murray and David Mason, two R&D industry stalwarts who will head up Griffith Hack Consulting, a groundbreaking consultant arm with a ‘first of its kind’ service offering provided by an Australian intellectual property firm...


  • Genuine dispute resolution

    September 7, 2011

    Andrew Goatcher and Ben Mawby consider the recently released parts 2 to 5 of the Civil Dispute Resolution Act 2011(Cth) and related Regulations and outline what this means for parties commencing litigation in Australia...


  • Personal Property Securities Act (PPSA) update

    September 7, 2011

    Ahead of the October commencement of The Personal Property Securities Act 2009 (Cth), Geraldine Farrell and Ben Mawby consider the new complex national regime to ensure your IP rights are best protected...


  • Update on gene patents

    September 7, 2011

    The gene patent debate continues in Australia as we await the Senate Committee’s report on proposed legislation to ban the patenting of genes and other biological materials....


  • Commercial contracts for dummies - part 2

    September 7, 2011

    The more you understand about the basics of commercial contracts, the better able you are to know when to seek assistance (and to ensure that your legal fees are proportionate to the level of risk). In this second part of our 'commercial contracts for dummies' series, we provide an overview of certain types of commercial contracts and drafting considerations...


  • Beware franchising penalties

    September 7, 2011

    A recent case involving a franchisor serves as a timely reminder about the consequences of failing to comply with undertakings provided to a court...


  • Private eyes are watching you

    September 7, 2011

    The widespread invasions of privacy associated with The News of the World phone hacking scandal has roused significant public debate about whether a statutory right to privacy should be introduced in Australia. In light of this, our law group examine the status of some of the issues surrounding privacy law reform in Australia...


  • The value of brand protection

    September 7, 2011

    Lucy Meadley and Nicola Scheepers highlight the value of franchise brand protection for both the franchisors and franchisees...


  • Fight for your rights

    September 7, 2011

    The US Supreme Court in the Stanford case considered whether the University and Small Business Patent Procedures Act of 1980 (known colloquially as the Bayh-Dole Act) modifies the starting position that inventors own their inventions...


  • Update on innovation patents and experts

    September 7, 2011

    The recent case decision in SNF (Australia) v Ciba serves as illustration that Australia’s unique innovation patent regime provides a very effective litigation tool. However, care should be taken when selecting the best expert to give evidence in a patent case...


  • Copycat told to wake up and smell the liability

    September 7, 2011

    The Bodum case decision establishes that if a product has reputable features or shape, selling ‘knock-offs’ may be misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth) (the Act) and may amount to passing off. However, proving reputation in product features and shape is exceptionally difficult...


  • Calling brand owners - have you considered the Community Design?

    September 7, 2011

    Brand owners selling goods and/or services or operating in Europe would do well to consider the advantages offered by protecting their logos, shape marks, etc. using the efficient and economical European Registered Community Design...


  • Naming rights

    September 7, 2011

    Griffith Hack recently assisted a US company in reclaiming a domain name from a previously authorised distributor in Australia. Jürgen Bebber highlights that domain names held by distributors containing a licensor’s trade marks cannot remain under the control of the distributor after the distribution agreement has been terminated...


  • Attention to detail

    September 7, 2011

    Amendments to the Patent Cooperation Treaty (PCT) Regulations recently came into force and require applicants to furnish additional documentation when entering national phase. Michelle Hedges and Jing Fung Tan explain the new requirements...


  • Thirst for knowledge

    September 7, 2011

    The Griffith Hack Information Service group has seen a steady expansion in client interest and uptake of services in the past financial year. Savvy inventors, entrepreneurs, and corporations are constantly challenging us to improve on our search techniques, strategies and access to patent data...


  • The use of online trade marks

    September 7, 2011

    A recent European Court of Justice preliminary ruling clarifies that in the European Union, the operators of online marketplaces can in some cases be held responsible for the infringement of third party trade marks by their users...


  • Aquatech's worldwide water mission

    September 7, 2011

    Griffith Hack's Melbourne-based cleantech client, Aquatech Water Purification Systems, has recently installed its first commercial operational water treatment system in Australia and has also licensed Safe Water Solutions in South Africa in an attempt to eradicate water pollution worldwide...


  • Griffith Hack Trainee Patent Attorney wins prestigious award

    September 7, 2011

    Following on from his Melbourne Engineering Research Institute (MERIT) prize, Griffith Hack Trainee Patent Attorney, Jing Fung Tan has been awarded the Chancellor Prize for Excellence in the PhD Thesis...


  • Swags for Homeless out on top

    September 7, 2011

    Griffith Hack would like to congratulate their client, Tony and Lisa Clark and their non-profit organisation, Swags for Homeless, on the recent award winning streak for their revolutionary product, the Backpack Bed™...


  • Griffith Hack announces further expansion

    September 7, 2011

    Griffith Hack has announced its expansion into the provision of R&D tax consulting services, with the formation of Griffith Hack Consulting Pty Ltd....


  • The International Comparative Legal Guide to: Patents 2012

    September 5, 2011

    IP Law Group Principal Wayne Condon and Eliza Mallon have again authored the exclusive Australian Chapter of the well recognised publication, 'The International Comparative Legal Guide to: Patents 2012'...


  • Corporate INTL: International Life Sciences Sector Panel

    September 2, 2011

    In the August edition of Corporate INTL, IP Law Group Principal Wayne Condon, provided the exclusive perspective on current life sciences developments in Australia...


  • Wheatstone LNG project receives final environmental approval

    August 31, 2011

    WA Environment Minister, Bill Marmion, has announced that final environment approval has been given to Chevron’s Wheatstone LNG development with 25 conditions to protect marine fauna, including whales, turtles and dugongs...


  • Smartphone patent rankings update: How does the Google/Motorola deal change things?

    August 26, 2011

    Since our March release of the 'Smartphone Patent Wars' whitepaper, there has been considerable movement in the smartphone patent ownership space. Using our Network Patent Analysis technique, we consider how these recent deals have changed the rankings...


  • How green is coal seam gas?

    August 24, 2011

    While the battle between mining concerns and farm gates continues, there remains a broader environmental question. How green is coal seam gas? Georgina Higinbotham considers...


  • Griffith Hack named 2011 Australian Patent Law Firm of the Year

    August 22, 2011

    Griffith Hack has been named 2011 Australian Patent Law Firm of the Year by CorporateINTL Magazine’s 2011 Global Awards. This adds to last year’s impressive result of 'Boutique IP Firm of the Year in Australia' in the 2010 Global Awards...


  • Korean LNG deal underpins Shell’s Prelude FLNG project

    August 19, 2011

    The South Korean government has approved a long-term agreement for Shell to supply 3.64mtpa LNG from 2013 to 2038. Mary Turonek considers the Prelude project to be a big tick of confidence in new untested FLNG technology...


  • Update on .XXX reservations

    August 16, 2011

    Following on from our recent report ‘.XXX Reservations’, domain names reserved in this way will be blocked from live use. Nicholas Tobias updates us on the ICM Registry and their recently published rules for defensive registrations...


  • Buckle up for the start of a new Domain Names era

    August 16, 2011

    After many years of deliberation, ICANN has given its approval to the mass expansion of the domain name system. What does this mean for you?


  • Reverse Domain Name Hijacking

    August 16, 2011

    Losing a domain name dispute usually entails not being able to reclaim a domain name. Looking at the recent case of Futuris Automotive Interiors (Australia) Pty Ltd v X9 Interactive LLC, our Domain Name team outline the need to take care when determining the merits of a complaint prior to initiating a proceeding...


  • Use of experts to assess the similarity of trade marks

    August 4, 2011

    Is expert opinion relevant to assessing the similarity of trade marks? The Federal Court of Australia belived so when recently handing down its decision in Symbion Pharmacy Services Pty Ltd v. Idameneo (No 789) Limited [2011] FCA 389...


  • What effect does background music have on consumer behaviour?

    August 4, 2011

    The playing of background music in retail environments is common, and we often take it for granted (or we think we do). New research shows that its effect can be very influential on consumer behaviour. The right music can result in increased sales, or increased sales of targeted products, while the wrong music can actually decrease sales and damage a business...


  • The importance of educating consumers

    August 4, 2011

    How important is it to educate consumers to associate your trade mark with you? The recent Federal Court decision in which Telstra Corporation Limited applied for registration of word YELLOW, highlights the importance of correctly using a trade mark through sales and advertising...


  • Personal Property Securities Act (2009) (Cth)

    August 4, 2011

    The Personal Property Securities Act 2009 (Cth) (PPS Law) is due to come into operation from October 2011. The PPS Law is the key piece of legislation which implements a national regime governing security interests over personal property...


  • Changes to Freedom of Information

    August 4, 2011

    As part of the reforms introduced by the Freedom of Information Amendment (Reform) Act 2010, IP Australia will now publish documents released pursuant to requests under the Freedom of Information Act on a Disclosure Log. Information will be provided on the Disclosure Log, without cost, for 12 months from the date of listing...


  • Happy Anniversary! Madrid Protocol and international registration

    August 4, 2011

    11 July 2011 marked the 10 year anniversary since Australia became a signatory to the Madrid Protocol...


  • Isolated DNA molecules used for cancer screening are held patent eligible in the US

    August 2, 2011

    Wayne Condon reports on the recent US Court of Appeals decision that isolated BRCA1/2 molecules, used for diagnosing increased breast and ovarian cancer risk, are eligible for patent protection in the US...


  • Pharmaceutical, Biotechnology and Chemical Inventions: World Protection and Exploitation

    July 18, 2011

    Wayne Condon and Rosie Stramandinoli recently authored the exclusive Australian perspective for “Pharmaceutical, Biotechnology and Chemical Inventions: World Protection and Exploitation”...


  • Griffith Hack client announced as Australian International Design Awards 2011 finalist

    July 4, 2011

    Griffith Hack would like to congratulate their client MGI on the selection of their Navigator G800 as a Finalist in the Sports & Leisure division of this year’s Australian International Design Awards...


  • Griffith Hack's new Principals

    July 1, 2011

    Griffith Hack is delighted to announce the elevation of Derek Baigent and Jürgen Bebber to Principal, effective 1 July 2011...


  • Western Australian parliamentary committee recommends Franchising Bill 2010 (WA) be opposed

    June 28, 2011

    Wayne Condon and Su-Ann Burke consider the Franchising Bill 2010 (WA) in light of the recent Western Australian parliamentary committee recommendation to oppose it...


  • How SMEs can exploit IP

    June 23, 2011

    Wayne Condon comments on IP Australia’s recent survey revealing a huge lack of awareness among SME’s of how IP issues relate to their businesses. Wayne discusses ways in which SMEs can exploit intellectual property.


  • UK’s IPO launches Peer to Patent Pilot Project

    June 22, 2011

    On the 1st of June, the UK’s intellectual property office launched a 6 month pilot of what is known as the Peer to Patent process. The scheme involves...


  • The social engineer

    June 14, 2011

    Griffith Hack client Lu Papi, has cemented his place in the Australian engineering and design folklore, courtesy of the revolutionary Freedom Wheelchair...


  • Breaking up is hard to do

    June 14, 2011

    The Civil Dispute Resolution Act 2011 comes into full effect in October 2011. We look at the new dispute resolution process and how this will affect you and your business...


  • London calling

    June 14, 2011

    The Global Partnerships Programme is a free service offered by UK Trade & Investment to assist Australian organisations involved in research activities to find UK research and/or development partners for mutual collaboration...


  • Commercial contracts for dummies – part 1

    June 14, 2011

    Do you like reading detailed Terms and Conditions? Do you enjoy incurring legal costs for basic contracts? We will keep you up to speed with the basics of commercial contracts...


  • Are you Franchising Code compliant?

    June 14, 2011

    Businesses need to be aware that the Franchising Code of Conduct applies to franchising agreements in essence rather than name...


  • Insider’s guide to cloud computing

    June 14, 2011

    Our IP Law Group explain how to adopt a best practice approach to the IT buzzword of the minute - cloud computing...


  • Preparation the key to patent law changes

    June 14, 2011

    Some changes proposed to Australia’s patent laws that are adverse to patent applicants, could have a negative impact on the patent applications you have already filed...


  • Biotech sector survives Federal Budget

    June 14, 2011

    The biotechnology sector breathed a sigh of relief in May having been spared further funding cuts in the Australian Federal Budget. Dr Stuart Boyer looks at the impact...


  • Handle with care

    June 14, 2011

    If you own a registered patent and/or trade mark, you may find yourself the target of unsolicited Intellectual Property (IP) services. Proceed with caution...


  • Raising the bar

    June 14, 2011

    Intellectual Property legislation in Australia is in the process of being amended to improve the fit and function of the IP system. In line with this objective, the Trade Marks Act 1995 will be amended in several respects...


  • The value of new designs

    June 14, 2011

    Two recent Australian Federal Court decisions provide real world examples of what will and what will not infringe a registered design...


  • All systems go

    June 14, 2011

    IP Australia has launched a new version of AusPat, the online record of Australian patents and patent applications. Its improved features include 28 searchable fields, and more comprehensive data on opposition and ownership...


  • Sydney Angels Sidecar Fund completes initial capital raising

    June 14, 2011

    Griffith Hack partner Sydney Angels has recently completed an AUD$10 million capital raising for the Sydney Angels Sidecar Fund, with their partner in the Sidecar Fund, Proto Investment Partners...


  • Phosphagenics’ new skincare product line launched

    June 14, 2011

    Griffith Hack client, Phosphagenics has just launched a new product in the ELIXIA® range, which aims to reduce the appearance of cellulite...


  • Griffith Hack proudly supports MS Angels

    June 14, 2011

    Griffith Hack was proud to recently host an evening with the Melbourne group of ‘MS Angels’...


  • Griffith Hack Trainee Patent Attorney accolade

    June 14, 2011

    Griffith Hack Trainee Patent Attorney, Jing Fung Tan, has been awarded the University of Melbourne’s Melbourne Engineering Research Institute (MERIT) prize for the Best PhD Thesis in Engineering in 2010...


  • Could CO2 be fuel of the future?

    June 8, 2011

    Our Oil and Gas Technologies Group look at Princeton University's lab experiments aimed at converting CO2 into useable fuels...


  • Proposed further amendments to the Trade Marks Act

    June 3, 2011

    Sally Shrimpton looks at the proposed amendments to the seizure process of counterfeit goods by the Australian Customs Service and on the proposed increased penalties for trade mark infringement...


  • Google Adwords and Trade Marks in the EU and Australia

    June 3, 2011

    Should a trader be able to use a competitor's brand as a Google Adword? A recent EU decision suggests that the practice may, in certain circumstances, be lawful; but there is doubt whether this would be followed in Australia...


  • Exercise of discretion not to remove a trade mark for non-use

    June 3, 2011

    A trade mark owner usually loses its right to a mark if it doesn't use the mark for 3 years and its registration is challenged for non-use. A recent case shows that the courts may be willing to "save" the registration in special circumstances but trade mark owners shouldn't be complacent...


  • The importance of clearing marketing slogans for use

    June 3, 2011

    Clearance searches for slogans and other wording used for marketing and advertising should not be overlooked. A recent case shows that use of such slogans is trade mark use, and can infringe registered trade mark rights...


  • "Grown in" food labelling and implications for trade mark owners

    June 3, 2011

    Trade mark owners need to be aware of new food labelling laws for "Grown in" claims, which join existing country of origin laws for "Made In" and "Product of"...


  • Proposed national business name registration system

    June 3, 2011

    A new, simpler system of business name registration is set to replace the current system of multiple business name systems in each of the Australian States and Territories...


  • The Pepsi® v Coke® taste-test and what it says about the effects of brands on the brain

    June 3, 2011

    As a regular item in NeedtoKnow, we highlight a scientific or psychological study on consumer behaviour that has caught our attention...


  • Warning: Unsolicited publications and invoices

    June 3, 2011

    Trade mark owners should be on alert for a spate of false and misleading notices and invoices involving their trade marks...


  • Keeping your eye on the competition

    June 3, 2011

    Proper trade mark portfolio management does not merely involve seeking registrations. It is also important to prevent your competitors sneaking in unfavourable registrations that conflict with your rights...


  • Fuelling Speculation - Investors start getting interested in Bio-fuels

    May 31, 2011

    Our Oil and Gas Technologies Group look at the rise in development and utilization of bio-fuels as several companies report significant gains in the prices of their shares...


  • Prelude FLNG - a prelude of things to come?

    May 24, 2011

    Mary Turonek looks at the recent go-ahead by Royal Dutch Shell PLC in respect to the construction of the $10 billion Prelude Floating LNG and the subsequent rise in activity in LNG production around the world...


  • Griffith Hack wins IP Specialist Firm of the Year

    May 20, 2011

    Leading Intellectual Property (IP) firm, Griffith Hack was last night named as the IP Specialist Firm of the Year at the ALB Australasian Law Awards in Sydney...


  • R&D project given $47 million boost to develop energy from renewable biomass

    May 12, 2011

    Our Oil and Gas Technologies Group look at the $47 million grant to develop more energy from renewable biomass and reduce reliance on import oils...


  • .XXX Reservations

    May 11, 2011

    If your business operates outside the adult industry (now also referred to as the XXX Community) and if you would prefer that your trade mark not be associated with the XXX Community, the Registry for the top level domain .xxx (ICM Registry) will offer a unique rights protection mechanism...


  • Refiling an unsuccessful UDRP Complaint

    May 11, 2011

    A recent UDRP decision has confirmed that unsuccessful UDRP Complaints may be refiled and considered afresh in certain limited circumstances...


  • ICANN Applicant Guidebook to be more IP friendly

    May 11, 2011

    As Government representatives on the Governmental Advisory Committee (GAC) and Internet Corporation for Assigned Names and Numbers (ICANN) continue to disagree on details relating to the mass expansion of the domain name system, ICANN has sought to address some of the GAC’s concerns in its revised Draft Applicant Guidebook, which it released recently...


  • Griffith Hack all set for INTA's Annual Meeting

    May 6, 2011

    Anne Makrigiorgos, Nicola Scheepers, Andrew Morton, Russell Berry, Sally Nicolson and Lyn Stevens are all set to attend this year's annual INTA meeting in San Francisco...


  • Now China's trialling Hydraulic Fracking!

    April 27, 2011

    China is the latest country to turn to shale gas as an alternative to coal with plans to identify and extract 1000 billion meters of the resource by 2020...


  • Turning Coal into Gold: What can the coal industry gain from the patent system?

    April 25, 2011

    Mike Lloyd and Byron Bowman outline the patent system as a valuable resource for the Australian coal industry to access national and global information regarding new innovation...


  • R&D prospects bleak for WA

    April 19, 2011

    Recent reports suggest that Western Australia’s future contribution to Research and Development (R&D) is heading backwards. Our Oil and Gas Technologies Group looks at the proposed budget cuts...


  • Australian copyright amendment preserves public health outcomes of generic medicines

    April 15, 2011

    The Therapeutic Goods Legislation Amendment (Copyright)Bill 2011(the Bill) was introduced into the Australian Commonwealth Parliament on 24 February 2011[1].The Bill proposes to amend the AustralianCopyright Act 1968 (Cth) to ensure...


  • Frack the Technology - Emerging Hydraulic Fracking Techniques

    April 15, 2011

    Our Oil and Gas Technologies Group look at this controversial extraction technique as a method of extracting natural gas from deep shale formations...


  • The Future for Oil - in Pursuit of a Reliable Alternative to Oil

    April 11, 2011

    With the price of crude oil at an all time high, our Oil and Gas Technologies Group consider why no alternative effective, large-scale commercial solution has been found to fossil fuels...


  • Woolworths' trademark battle continues

    April 7, 2011

    Sally Nicolson comments on the Federal Court ruling in which Organic Marketing Australia alleged Woolworths' Honest to Goodness Family Meals campaign infringed upon its intellectual property...


  • Smarter than smartphones?

    April 4, 2011

    In the latest edition of Australisian Science, Mike Lloyd considers how new technology is untangling the complex network of patents at the centre of a litigation war between smartphone companies...


  • Smartphone patent wars; who comes out on top?

    April 1, 2011

    Mike Llloyd recently spoke with Switzer and considered the question of which smartphone manufacturer comes out on top in the patent wars.


  • "Hybrid" Buick

    March 30, 2011

    Daniel Rosenthal considers the latest car brand to join in the fuel economy developments of hybrid car manufacturing...


  • Hollywood to drag iiNet back to court

    March 28, 2011

    Wayne Condon speaks to the Australian Financial Review on the latest update in the iiNet copyright infringement case...


  • Getting the Deal Through - Life Sciences 2011: Australian Chapter

    March 25, 2011

    In the latest edition of this international comparative legal guide, Wayne Condon, Geraldine Farrell and Su-Ann Burke provided the Australian legal analysis of key issues in our pharmaceutical and health care industries, including legislative compliance issues for pharmaceutical and medical device manufacturers, the funding of our health care system and access to medicines...


  • Monetising Blackberry

    March 22, 2011

    The owner of the BLACKBERRY trade mark, Research In Motion Limited recently filed a complaint with the World Intellectual Property Organisation under the Uniform Domain Name Dispute Resolution Policy and succeeded...


  • Another timeline but no resolution

    March 22, 2011

    The Silicon Valley meeting hosted by the Internet Corporation for Assigned Names and Numbers concluded on 18 March 2010 with yet another timeline for the launch of the mass expansion of the Domain Name System...


  • Two million and counting

    March 22, 2011

    Australian domain names are in the top ten largest county codes in the world, according to the Australian Domain Administrator. It recently marked a significant milestone with two million .au domain names having being registered...


  • LNG Helps Breach Japan's Energy Shortfall

    March 18, 2011

    Shell is preparing to divert LNG cargoes to Japna to help breach energy shortfalls arising from the growing nuclear crisis. Japan is already the biggest consumer of LNG.


  • The significance of Natural Gas for meeting our growing energy demand

    March 18, 2011

    There in no doubt that since its first recorded use in the 1800’s the use of natural gas as an alternative source of energy has grown exponentially. The use of lower-carbon fuels like natural gas to help reduce greenhouse gas emissions is essential to meet our current and future energy challenges.


  • New method for sweetening natural gas

    March 18, 2011

    Hydrogen sulphide is a common (and often major) contaminant of natural gas. There are several "sweetening" methods which can be used to remove contaminants to purify natural gas but they often prove inefficient, requiring large amounts of thermal energy.


  • Ford Patents relating to training drivers to reduce fuel consumption

    March 18, 2011

    Daniel Rosenthal considers the two main challenges in moving to a more sustainable existence: development of appropriate technology and education to modify energy (resource) usage behaviours...


  • Australian Court rules against PERSIAN FETTA

    March 17, 2011

    A trader may be able to convince the Trade Marks Office that a descriptive trade mark has acquired a reputation and has become distinctive through use, but this is no guarantee that the registration for that mark is valid and enforceable...


  • Deadlines for acceptance of Australian trade mark applications

    March 17, 2011

    Unlike many other countries that have deadlines within which a response to an Office Action must be filed, the Australian Trade Marks Office sets a deadline of 15 months within which the application must placed in order for acceptance...


  • Allergic to Facebook

    March 17, 2011

    Beware of your Facebook fan pages. According to a recent Federal Court decision, comments that your customers post on the wall of your Facebook fan page may well be attributed to you...


  • Coloured juice bottles not distinctive

    March 17, 2011

    A recent Australian Trade Marks Office decision highlights the difficulty of registering colour marks where the goods bearing the colour mark are accompanied by brands and other distinguishing material...


  • Important amendments to Australian trade mark law

    March 17, 2011

    IP legislation in Australia is in the process of being amended to improve the fit and function of the IP system. In line with this objective, the Australian Trade Marks Act 1995 will be amended in several respects...


  • Griffith Hack in top tier for trade mark prosecution in Australia

    March 17, 2011

    Griffith Hack has maintained its tier 1 position for the fifth consecutive year in trade mark prosecution work in Australia in the latest World IP Survey, conducted by Managing Intellectual Property...


  • Can a food's brand affect your perceptions of taste?

    March 17, 2011

    Using fast food branding, we report on a study that looked at whether brands on foods can affect a person's perception of taste...


  • Portfolio reviews for safeguarding valuable IP

    March 17, 2011

    A registered trade mark may become vulnerable to a removal application by a third party in Australia if it has not been used for a continuous period of three years in respect of the goods and/or services for which it is registered...


  • "Notorious markets" for counterfeiting good identified in new report

    March 17, 2011

    A report by the Office of the United States Trade Representative has found that global piracy and counterfeiting continue to thrive, assisted by markets (both ‘bricks & mortar’ and online) which continue to blatantly sell the goods...


  • The rise and risks of green trade marks and branding

    March 17, 2011

    An investigation by Griffith Hack into the boom in green trade marks – registering terms such as ‘green’, ‘eco’ and ‘enviro’ to support a product or service – has found these terms are becoming so commonplace that they risk losing their impact in a cluttered marketplace...


  • A whole new light on patents

    March 15, 2011

    Griffith Hack has partnered with Ambercite to make the innovative patent analysis technique Network Patent Analysis (NPA) available to its clients to support their research and development (R&D) and intellectual property (IP) management strategies...


  • China into overdrive

    March 15, 2011

    A document released by China’s Intellectual Property Office (SIPO) has revealed that China is targeting to quadruple both foreign and domestic patent applications filed by Chinese nationals for every 1 million people by 2020.


  • Get smart

    March 14, 2011

    Smartphones are now a way of life for many, be it the trendsetting iPhone, business-tool BlackBerry, or competing phones from the likes of Samsung, HTC and Nokia. Smartphones integrate advanced technologies, and companies leading the smartphone revolution are filing thousands of patent applications to protect their innovations...


  • Changes on the horizon

    March 14, 2011

    In 2009, IP Australia (IPA) presented a number of consultation papers aimed at improving Australia’s patent laws. On 3 March 2011 IPA published a draft Bill to amend the Patents Act 1990 (Cth) (the Act) (and other IP legislation) which is due to be presented to the Australian Parliament in the 2011 autumn session...


  • Revocation by the backdoor?

    March 14, 2011

    Kimberly-Clark brought infringement proceedings against Multigate for infringement of three patents, including Australian Patent No 758905 (the patent). Multigate cross-claimed that the patent was invalid...


  • Stitching in time

    March 14, 2011

    A recent case demonstrates the importance of obtaining advice as early as possible as to whether problematic claims in granted patents should be amended. Amending a granted patent may become necessary to maintain its validity. Relevant prior art may come to light only after grant, or through prosecution in other countries...


  • Full disclosure

    March 14, 2011

    In a recent decision, the Australian Patent Office (APO) refused a patent application for lacking sufficient technical disclosure in the specification. The decision in First Principles, Inc. [2011] APO 1 concerned a patent application in respect of a ‘rational inquiry method’ relating to educational methods for personal improvement...


  • What is patentable?

    March 14, 2011

    On 16 February 2011, the ACIP published a report on Patentable Subject Matter. ACIP concluded the current ‘manner of manufacture’ test for patentability under the Patents Act 1990 (Cth) (the Act) is obscure and ambiguous. To improve the clarity of the Act, ACIP recommended bringing the statutory language of the Act into line with current practice...


  • Framing designs for optimal protection

    March 14, 2011

    The assessment of a registered design in Australia is made with reference to a notional ‘informed user’. The informed user considers the visual features of the design rather than any functional aspects. Businesses need to understand the informed user concept in order to secure the strongest possible registered design protection...


  • Beware the traps of social media

    March 14, 2011

    The social media phenomenon has changed the way people view their world and many businesses have adopted this shift into their marketing strategy. However, there are also many potential pitfalls which all businesses should be aware of...


  • Catch me if you can

    March 14, 2011

    Counterfeit goods and digital piracy are major global concerns, costing brand owners and rights holders up to an estimated $600 billion per annum. While a recent international agreement signals a real intention to tackle this issue on a global level, brand owners in Australia are already well placed to take effective action against counterfeiting on a local level...


  • Holding onto your rights

    March 14, 2011

    Two recent Australian and US cases demonstrate how inadequately drafted contracts can leave employers empty handed when it comes to owning employee-generated IP...


  • Naming rights

    March 14, 2011

    A recent celebrity domain name dispute highlights the common practice of using misspelt domain names to divert internet traffic. Paris Hilton succeeded in a dispute involving Dimitrij Timofeev, who had registered a misspelling of Hilton’s name, paris-hillton.com...


  • Computer says no

    March 14, 2011

    On 15 December 2010, the Full Federal Court of Australia unanimously held that copyright did not subsist in the compilation of listing data in the White Pages Directory (WPD) or Yellow Pages Directory (YPD). Of critical importance was the factual finding that the form of expression of this data in both directories was produced using an automated computer process...


  • Talkin' bout a revolution

    March 14, 2011

    Following the implementation of the new Therapeutic Goods (Medical Devices) Regulations 2002, there have been multiple independent reviews of these regulations which all call for further reform...


  • A new era for trade practices

    March 14, 2011

    On the 1 January 2011 the Trade Practices Act 1974 (Cth) (TPA) was renamed the Competition and Consumer Act 2010 (Cth) (CCA). The ACL has maintained the existing prohibitions against misleading, deceptive or false statements and unconscionable conduct but also introduces new provisions...


  • Joining forces

    March 14, 2011

    The move towards a Trans Tasman Single Economic Market (SEM) (which began on 20 August 2009) received a boost on 16 February 2011 when Prime Minister Gillard and New Zealand Prime Minister Key announced the framework will include a single patent examination process...


  • The gene debate continues

    March 14, 2011

    A hotly debated issue over the last three months is the ongoing review in Australia of a proposal to exclude the patenting of human genes and biological materials by amending the Australian Patents Act 1990 (Cth) (the Act). We now look at the virtually identical bill that was introduced into the Australian House of Representatives on 21 February 2011...


  • FreshBins' clean sweep

    March 14, 2011

    Griffith Hack congratulates our client, FreshBins, on their recent New Inventors award...


  • Griffith Hack out on top

    March 14, 2011

    Griffith Hack has had a bumper start to the year with strong recognition by Managing Intellectual Property (MIP), Chambers Global Directory: The World’s Leading Lawyers, Doyle’s Guide, Australian Financial Review: The Best Lawyers in Australia in 2011, and Expert Guides...


  • The war for control of our smartphones revealed

    March 1, 2011

    Griffith Hack and Ambercite have now released a white paper comparing smartphone patents using Network Patent Analysis (NPA). So who has the leading smartphone patents? Apple, Nokia or Microsoft?...


  • iiNet survives second round of copyright litigation - but only just

    February 28, 2011

    The Australian Full Federal Court affirms that the internet service provider iiNet is not responsible for the unlawful downloading and sharing of films and TV programs by its customers...


  • ACCC's power to issue substantiation notices

    February 25, 2011

    As a result of the introduction of the Australian Consumer Law in 2010, the ACCC can now issue notices to individuals or corporations requiring the production of information or documents capable of substantiating claims or representations made in the marketplace...


  • Case note: ACCC v Allergy Pathway

    February 18, 2011

    A recent decision of the Federal Court has found a company and its sole director liable for statements made by third parties on social networking sites such as Facebook and Twitter.


  • Navigating your way around the important provisions of the Competition and Consumer Act 2010

    February 18, 2011

    The ACL has maintained the existing prohibitions against misleading, deceptive or false statements and unconscionable conduct but also introduces new provisions of the Competition and Consumer Act 2010...


  • Generics succeed in warding off interlocutory injunction

    February 17, 2011

    Two generic pharmaceutical companies have successfully avoided an interlocutory injunction which would have stopped them from launching generic versions of docetaxel...


  • Griffith Hack sharpen their edge and come up trumps

    February 1, 2011

    Griffith Hack has again been recognised as a Tier 1 IP firm by Doyle’s Guide. The independently compiled legal survey has ranked GH amongst our leading competitors with impressive results...


  • Queensland floods halt drilling

    January 24, 2011

    Coal seam gas drilling in Surat Basin has been brought to a standstill by the flooding in Queensland. The floods have obstructed road access into...


  • Brisbane Office Reopened

    January 20, 2011

    We can confirm that our Griffith Hack Brisbane office is now open again after being closed due to the flooding crisis in Queensland. All operations are running as usual.


  • Timeline for launch of new top level domains uncertain

    January 18, 2011

    The year 2011 is the year the domain name system is set to expand in an unprecedented manner. The framework allowing applications for an unspecified number of new top level domains will most likely be finalised in 2011. Trade mark owners in particular are viewing this development with some concern. New top level domains may result in a multitude of abusive domain name registrations. If such registrations are to be challenged or if defensive applications are to be filed, company budgets for intellectual property disputes may need to be increased...


  • The Battle for Groupon

    January 18, 2011

    Groupon Inc is a US start-up that has rapidly grown to a sizeable company offering daily deals to its customers via its website at www.groupon.com. It has reportedly knocked back a recent offer from Google Inc in the amount of US$ 6 billion, preferring to raise capital in an initial public offering...


  • NeedtoKnow: Domain Names

    January 14, 2011

    In Issue 3 2010 of Breakthrough, we reported that the Internet Corporation for Assigned Names and Numbers (ICANN) expected to be in a position to accept applications for new generic top level domains as early as 30 May 2011. This timeline now seems uncertain...


  • Nicola Scheepers interviewed on whether UGG is a trade mark or descriptive term

    December 15, 2010

    In an interview that went live on 15 December 2010 on Boardroom Radio Australia, Nicola Scheepers commented on a recently filed trademark infringement lawsuit against Emu Australia for allegedly breaching the US company Decker Corporation (Decker) which owns UGG Australia’s trade mark in the US.


  • Call for Coal Seam Gas developments to be consistent with the National Water Initiative

    December 12, 2010

    The National Water Commission recently published its Position Statement on Australia’s growing Coal Seam Gas (CSG) industry and potential impacts on adjacent surface and groundwater systems. While it acknowledges that the CSG industry offers substantial economic and other benefits...


  • Our Christmas & New Year office hours

    December 10, 2010

    Please click here for our Christmas & New Year office hours.


  • Proposed ban on the patenting of "biological materials"

    December 6, 2010

    Patents for biological materials, including genes, may face a significant change if a proposed amendment to section 18 of the Australian Patents Act proceeds.


  • Expected increase in FLNG technology in next 5-10 years

    December 6, 2010

    A recent survey conducted by the Global Floating Liquefied Natural Gas (FLNG)summit has pointed to a projected increase in investment over the next 5-10 years...


  • Small Technologies Industry Uptake Program

    November 30, 2010

    Griffith Hack supports the implementation of 'The Small Technologies Industry Uptake Program' (STIUP) and is pleased to be an approved supplier of IP services to participants. This program has been developed by the Victorian Government to...


  • Other People's Patents - Using Information for Innovation

    November 23, 2010

    Griffith Hack's Mike Lloyd and Optimice's Doris Spielthenner highlight searching tools that take advantage of existing information to drive succcessful innovation, with a particular focus on SMEs.


  • Annual World Oil Innovation Awards

    November 15, 2010

    The 9th Annual World Oil Innovation Awards recognises companies and industry leaders for technological advancements and innovative thinking in the oil industry.


  • Innovation Competition for Ocean Oil Spills Technologies

    November 15, 2010

    The X Prize Foundation has launched a $1.4 Million competition designed to inspire pioneering solutions to containing and cleaning up ocean oil spills...


  • Switzer News: Managing IP for competitive advantage, Robert Wulff

    October 25, 2010

    Robert Wulff explores various strategies to turn Intellectual Property into a competitive advantage in "Managing IP for competitive advantage".


  • Griffith Hack and Univation WA 2010

    October 15, 2010

    Griffith Hack is looking forward to the Univation event on November 3 and 4 and is proud to be supporting this unique event as a Platinum sponsor...


  • The Green Trade Mark Boom - Gold Or Grey?

    October 12, 2010

    An investigation into the boom in green trade marks - registering terms such as 'green', 'eco' and 'enviro' to support a product or service - has found these terms are becoming so commonplace that they risk losing their impact in a cluttered marketplace, and companies need to be more upfront and smarter about how they portray and leverage their eco credentials.

    The analysis has been completed by the Trade Marks Group of Griffith Hack - a leading firm of patent and trade marks attorneys and intellectual property (IP) lawyers.


  • Russell Berry and Geraldine Farrell named among the world's leading patent and technology licensing lawyers

    October 11, 2010

    Russell Berry and Geraldine Farrell have been listed in Intellectual Asset Management’s magazine "IAM Licensing 250, The World's Leading Patent & Technology Lawyers" for 2010.


  • Update on ICANNs Release of New gTLDs

    October 6, 2010

    The board of the Internet Corporation for the Assignment of Names and Numbers (ICANN) met in Trondheim Norway on 24 and 25 September to discuss key issues relating to the release of new generic top-level domains (gTLDs).


  • The International Comparative Legal Guide to: Patents 2011

    October 6, 2010

    Principal and National Practice Group Leader of the IP Law Group, Wayne Condon and Associate Eliza Saunders recently contributed the Australian Chapter of The International Comparative Legal Guide to: Patents 2011.


  • Griffith Hack again listed as top PCT filer in Australia

    October 5, 2010

    Griffith Hack has been recognised as the top IP firm for Patent Cooperation Treaty (PCT) filings in Australia by Managing Intellectual Property (MIP) for the second year running.


  • Google can sell trade marks as keywords

    August 16, 2010

    Jürgen Bebber speaks with Boardroom Radio about the recent Google case rulings in regards to their rights to sell trade marks as search terms and their upcoming European ruling.


  • Griffith Hack announces expansion

    July 7, 2010

    Griffith Hack is pleased to announce a significant expansion, with specialist WA firm Mallon & Co. Mallon & Co specialises in technology and intellectual property (IP) law, and has an impressive client base ranging from the mining and resources sector to retail, food and beverage, pharmaceuticals and skincare.


  • Water innovation in Australia: pipeline to profit?

    July 7, 2010

    A detailed analysis of our water innovation patents by Griffith Hack in the report 'Water Innovation in Australia: Pipeline to Profit?' has found Australian companies are failing to leverage their valuable intellectual property (IP) into global markets.


  • Mind the gap: medical technology innovation in Australia

    June 1, 2010

    A detailed study of patents in the US$300bn and expanding medical technology market has identified significant areas of potential for Australian companies to pursue on a global scale.


  • New top level domain names: New trade mark issues?

    April 16, 2010

    Griffith Hack Senior Associate, Jürgen Bebber speaks to Boardroom Radio about the recent ICANN developments in regards to registeration of top level domains names.


  • New CEO Leading IP Firm

    March 16, 2010

    Leading intellectual property (IP) firm, Griffith Hack, is pleased to announce the appointment of Steve Parker to the role of Chief Executive Officer.


  • Lessons from Hybrid Car Innovation for Clean Technologies

    October 13, 2009

    Griffith Hack is pleased to announce the launch of the report: ‘Who holds the power? Lessons from hybrid car innovation for clean technologies.’


  • Griffith Hack’s New Independent National Board Advisor

    August 6, 2009

    Leading National intellectual property (IP) firm, Griffith Hack, is pleased to announce the appointment of experienced non executive company director and advisor, Kate Spargo, as an independent advisor to the National Board.


  • Griffith Hack's new Special Counsel

    July 16, 2009

    Griffith Hack is pleased to announce the appointment of leading IP litigator, Sally Nicolson, in the role of Special Counsel. Sally’s expertise will further increase the strength of the Griffith Hack Law Group, particularly in the area of IP commercial and